DETAILED CORRESPONDENCE
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on 11/18/2025 has been entered.
Claims 1, 8-15, 17, 19, and 21 are pending in this application.
Applicant’s amendment to the claims filed 11/18/2025 is acknowledged. This listing of the claims replaces all prior versions and listings of the claims.
Applicant’s Declaration under 37 CFR 1.132 filed 11/18/2025 is acknowledged.
Applicant’s remarks filed on 11/18/2025 in response to the final rejection mailed on 08/18/2025 is acknowledged and has been fully considered.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Election
The elected subject matter is
Group IA, corresponding to claim 17, new claim 21, and linking claim 1, drawn to the technical feature of a method for increasing susceptibility of bacteria to antimicrobial agents, comprising exposing the bacteria to a composition comprising a mutated lactonase belonging to the phosphotriesterase-like lactonase family, and at least one antimicrobial agent, wherein said mutated lactonase has the sequence SEQ ID NO: 1 in which the amino acid tryptophan W at position 263 is substituted by the amino acid isoleucine I,
elected without traverse in the reply filed 10/16/2024.
Claims 8-15 and 19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/16/2024.
Claims 1, 17 and 21 are being examined on the merits only to the extent they read on the elected subject matter.
Claim Rejections - 35 USC § 112(b)
The rejection of claim 7 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention is withdrawn in view of the cancelation of claim 7.
Claims 1, 17 and 21 are newly rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 (claims 17 and 21 dependent therefrom) contains the trademarks/trade names “clavulanate” in line 19, “neomycin” in lines 35-36, “neosporin” in line 36, and “polysporin” in line 42. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b). See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe antibiotics and, accordingly, the identification/description is indefinite.
Response to Remarks: beginning p 15 of Applicant’s response to rejections under 35 USC 112(b); Applicant in summary contends the cancelation of claim 7 renders all pending claims definite.
Applicant’s remarks are considered and found not convincing, as set forth above the amended claim 1 is rejected for the recitation of trademarks as limitations.
Claim Rejections - 35 USC § 103
The rejection of claim 1 under 35 U.S.C. 103 as being unpatentable over Guendouze et al. (Front Microbiol, 2017, 8:227; cited on the Form PTO-892 mailed 08/16/2024; herein referred to as Guendouze) and evidentiary reference UniProt Accession No. Q97VT7 (3 pages, 02/06/2013; cited on the Form PTO-892 mailed 08/16/2024; herein referred to as UNI),
the rejection of claims 3, 7 and 17 under 35 U.S.C. 103 as being unpatentable over Guendouze as applied to claim 1 above, and further in view of Kiran et al. (Iran J Microbiol, 2011, 3:1; cited on the Form PTO-892 mailed 02/14/2025; herein referred to as Kiran),
the rejection of claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Guendouze as applied to claim 1 above, and further in view of DeQueiroz et al. (J Appl Microbiol, 2007, 103:794; cited on the Form PTO-892 mailed 02/14/2025; herein referred to as DQ), and
the rejection of claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Guendouze as applied to claim 1 above, and further in view of Olszak et al. (Appl Microb Cell Physiol, 2015, 99:6021; cited on the Form PTO-892 mailed 02/14/2025; herein referred to as Olszak)
are withdrawn in view of the cancelation of claims 3-7, and the amendment to claim 1 to recite the Markush groups corresponding to the antibiotics, disinfecting agents, biocides, and bacteriophages.
Claims 1, 17 and 21 are newly rejected under 35 U.S.C. 103 as being unpatentable over Kiran in view of Guendouze and as evidenced by UniProt Accession No. Q97VT7.
The instant rejection is necessitated by claim amendment.
Claim 1 is drawn to a method for increasing susceptibility of bacteria to antimicrobial agents, comprising exposing the bacteria to a composition comprising a mutated lactonase belonging to the phosphotriesterase-like lactonase family at a concentration of 0.1 mg/L to 10 g/L, and at least one antimicrobial agent,
the at least one antimicrobial agent being selected from the group consisting of antibiotics, mixtures of antibiotics, disinfecting agents, mixtures of disinfecting agents, biocides, mixtures of biocides, bacteriophages, and mixtures of bacteriophages, to inhibit the growth of bacteria
wherein said mutated lactonase has the sequence SEQ ID NO: 1 in which the amino acid tryptophan W at position 263 is substituted by the amino acid isoleucine I
wherein the inhibition of bacterial growth is increased by at least a factor of 2 compared to the use of said at least one antimicrobial agent alone,
wherein the antibiotic, disinfecting agent, biocide, bacteriophage, and bacteria being inhibited are selected from the respective Markush groups recited in the claim.
Claim 1 is being interpreted that the lactonase comprises both SEQ ID NO: 1 and the mutation W263I, as SEQ ID NO: 1 alone does not contain said mutation.
Kiran discusses enzymatic quorum quenching and its increase of the antibiotic sensitivity of multidrug resistance bacteria [title], and describes that quorum quenching has potential in antimicrobial therapeutics due to the associated increase in antibiotic susceptibility of target bacteria [abstract].
Regarding claim 1, Kiran teaches a method of administering antibiotics such as ciprofloxacin and gentamycin in combination with lactonase resulting in a significant reduction in virulence factor production by P. aeruginosa [abstract]. Kiran further teaches the determination of Minimum Bactericidal Eradication Concentration (MBEC) for each antibiotic and isolated strain of bacteria [p 5, col 1, para 2], wherein MBEC corresponds to the concentration of antibiotic at which no viable cell counts in biofilms were obtained [p 3, col 2, para 1]. Kiran further teaches lactonase treatment potentiates antibiotic efficiency because biofilm eradication could be achieved at sub-MBEC levels for gentamycin and ciprofloxacin [p 5, col 1, para 2], therefore indicating that the removal or reduction of biofilm formation increases the susceptibility of treated bacteria to said antibiotic, wherein antibiotics are understood to be compounds that inhibit the growth of bacteria as defined by the specification at [page 5] which recites antibiotics may be bacteriostatic, meaning any agent capable of reducing, limiting or inhibiting bacterial growth. Therefore the teachings of Kiran correspond to the limitations of exposing bacterial strains of Pseudomonas aeruginosa to a composition comprising a lactonase and antibiotic gentamycin to inhibit the growth of said bacteria.
Regarding claim 1 and the limitation of inhibiting bacterial growth by a factor of at least 2, Kiran teaches that the PA2 strain of P. aeruginosa had an MBEC of gentamicin of 4000 mcg/ml, which was reduced to 300 mcg/ml in the presence of lactonase [p 5, col 1, para 3], which is considered to correspond to an increase in the inhibition of bacterial growth by a factor of at least 2.
Kiran does not teach a mutated lactonase belonging to the phosphotriesterase-like lactonase family at a concentration of 0.1 mg/L to 10 g/L wherein said lactonase has the sequence SEQ ID NO: 1 in which the amino acid tryptophan W at position 263 is substituted by the amino acid isoleucine I.
Guendouze discusses the effect of quorum quenching (QQ) lactonase in clinical isolates of Pseudomonas aeruginosa compared with quorum sensing inhibitors (QSIs) [title].
Regarding claim 1 and the limitations of the lactonase, Guendouze teaches a method of exposing growing P. aeruginosa cultures to the W263I mutant of lactonase SsoPox [abstract], wherein the lactonase is known to degrade quorum sensing signals known as AHLs [p 2, col 1, para 4]. As the sequence of SsoPox shares 100% sequence identity with SEQ ID NO: 1 as evidenced by UNI [see Appendix A], the W263I mutant SsoPox of Guendouze is considered to satisfy the sequence limitations recited in the claim [see Appendix B].
Regarding claim 1 and the limitation of the dosage of the lactonase, Guendouze teaches the method described above wherein the enzyme SsoPox was added at 0.5 mg/mL [p 2, col 2, para 4], which is encompassed by the claimed range of 0.1 mg/L to 10 g/L that corresponds to the range of 0.0001 mg/mL to 10 mg/mL.
In view of Kiran and Guendouze, it would have been prima facie obvious for one of ordinary skill in the art before the effective filing date to modify the method of Kiran by using the SsoPox mutant of Guendouze, since the simple substitution of one known element for another results in a predictable result. One of ordinary skill in the art would have recognized that both the lactonase of Kiran and the SsoPox mutant of Guendouze are both lactonase enzymes that catalyze the degradation of AHL quorum sensing molecules, and as such both are capable of being incorporated into methods such as those described by Kiran. Thus it would have been obvious to one of ordinary skill in the art to replace the lactonase of Kiran with the SsoPox mutant of Guendouze, as one of ordinary skill in the art would have been able to carry out such a substitution with a reasonable expectation of success because both Kiran and Guendouze discuss method of quorum quenching with lactonase enzymes.
Regarding claim 17, Kiran teaches the treatment of the PA2 strain of P. aeruginosa with gentamicin resulting in an observed MBEC 4000 mcg/ml, which was reduced to 300 mcg/ml in the presence of lactonase [p 5, col 1, para 3], which is considered to correspond to an increase in the inhibition of bacterial growth by a factor of at least 2 as described in the rejection of claim 1 above. The increase in inhibition of bacterial growth by this treatment is considered to correspond to an increased susceptibility of the bacteria to said antimicrobial agent, as the observed MBEC of the combination was reduced from 4000 mcg/ml to 300 mcg/ml with the addition of lactonase.
Regarding claim 21, Kiran teaches the method above comprising the use of gentamicin and lactonase to inhibit the growth of P. aeruginosa as discussed in the rejection of claim 1 above. Regarding the further limitations on the disinfecting agent and on the bacteriophage in lines 3-4, claim 21 does not further limit the method of claim 1 to comprise a disinfecting agent or a bacteriophage, and therefore encompasses all of the alternatives of antimicrobial agents such as antibiotics, mixtures of antibiotics, disinfecting agents, mixtures of disinfecting agents, biocides, mixtures of biocides, bacteriophages, and mixtures of bacteriophages. Therefore the teachings of Kiran are considered to correspond to the limitations of claim 21.
Therefore, the invention of claims 1, 17 and 21 would have been obvious to one of ordinary skill in the art before the effective filing date.
Response to Remarks: beginning at page 16 of Applicant’s response to rejections under 35 USC 103 and page 1 of Applicant’s Declaration under 37 CFR 1.132; Applicant in summary contends there is no evidence that biofilm disruption can enhance the direct bactericidal or bacteriostatic activity of an antibiotic; Applicant further contends the fact that SsoPox does not enter the cell and is not susceptible to the same resistance mechanisms as an antimicrobial agent does not imply that its use in combination with an antimicrobial agent would increase the effectiveness of the antimicrobial agent; Applicant further contends the inhibition of bacterial growth by at least a factor of 2 would not be possible with the recited concentrations of lactonase in the claims; Applicant further contends the Kiran reference should be discarded; Applicant further contends Kiran does not teach the use of a dose of antimicrobial agent sufficient to kill bacteria consistent with the increase in inhibition of bacterial growth by a factor of 2 when used with lactonase; Applicant further contends Kiran describes an implausible and contradictory combination of antibiotics with lactonase that results in increased susceptibility of the biofilm; Applicant further contends the claimed method provides results that were unexpected at the time of invention and could not have been deduced from the cited prior art.
Applicant’s remarks are considered and found not convincing.
As the rejections set forth in the previous office action have been withdrawn, Applicant’s remarks and Declaration under 37 CFR 1.132 do not directly correspond to the rejections set forth above. Applicant’s remarks and Declaration are therefore being considered as though they pertain to the cited prior art as used in the present rejection.
Regarding the assertion that there is no evidence that biofilm disruption can enhance the direct bactericidal or bacteriostatic activity of an antibiotic found in Guendouze, and the assertion in the Declaration that the fact that SsoPox does not enter the cell and is not susceptible to the same resistance mechanisms as an antimicrobial agent does not imply that its use in combination with an antimicrobial agent would increase the effectiveness of the antimicrobial agent: while this aspect of Guendouze is not used in the present rejection, Guendouze discloses that P. aeruginosa has developed many strategies to counteract antimicrobial treatments that include biofilm, beta-lactamases and increased efflux rates [page 6, col 1, para 1]. One of skill in the art would reasonably conclude that methods to disrupt one of these counteraction strategies, such as with the quorum quenching activity of lactonase enzymes to reduce or inhibit the quorum sensing-regulated process of biofilm formation, would reasonably enhance the effect of antibiotics by reducing or inhibiting said counteraction strategy. Additionally, as stated in the rejection above, Kiran shows that the introduction of lactonase not only reduces biofilm formation, but reduces the amount of antibiotic required to inhibit cell growth. One of skill in the art would recognize that lactonase and antimicrobial treatments act on different mechanisms, and as explicitly stated by Guendouze the formation of a biofilm prevents or counteracts antimicrobial treatment. One of skill in the art would understand that lactonase is not entering the cell, and is merely catalyzing the degradation of AHLs, wherein said AHLs are coordinating the production of quorum sensing-regulated resistance mechanisms such as biofilms, and would therefore expect that the reduction in biofilm formation would facilitate antibiotic interaction with target cells.
Regarding the assertion that the inhibition of bacterial growth by at least a factor of 2 would not be possible with the recited concentrations of lactonase in the claims, Kiran shows the use of a lactonase to inhibit biofilm formation, which is considered to correspond to an amount of lactonase sufficient for the disruption of quorum sensing, which in combination with antibiotics shows an decrease in MBEC of greater than a factor of 2, and Guendouze teaches the use of a lactonase at 0.5 mg/mL corresponding to “maximal quenching” [page 3, col 2, final paragraph].
Regarding the assertion that the Kiran reference be discarded, MPEP 2123.I states literature of the art is relevant for all it contains. While Applicant cites an error in the labeling of a Figure in Kiran, this Figure has not been relied upon in the rejection, and Applicant has stated “This is, without a doubt, an error in the name of the y-axis which designates, logically and according to the conclusion of the manuscript, % of the surviving cells in CFU/mL” [page 25, final paragraph of Remarks]. As Applicant is capable of understanding what this Figure is communicating, one of ordinary skill in the art would similarly be expected to understand what this Figure is communicating in view of the disclosure of Kiran in the body of the reference. As such, the reference of Kiran will not be discarded.
Regarding the assertion that Kiran does not teach the use of a dose of antimicrobial agent sufficient to kill bacteria consistent with the increase in inhibition of bacterial growth by a factor of 2 when used with lactonase, Kiran shoes the decrease in MBEC by more than a factor of 2 when combined with lactonase as stated in the rejection above.
Regarding the assertion that Kiran describes an implausible and contradictory combination of antibiotics with lactonase that results in increased susceptibility of the biofilm, it is unclear from Applicant’s remarks which aspects of the Kiran reference used in the rejection are implausible or contradictory.
Regarding the assertion in the Declaration that the claimed method provides results that were unexpected at the time of invention and could not have been deduced from the cited prior art, said assertion is being interpreted as an allegation of unexpected results. Applicant sets forth in the Declaration an experiment [page 3] comprising a P. aeruginosa strain PA14 grown with 5 mg/L lactonase and controls without lactonase, which were treated with two low doses of bleach (and associated negative control), wherein cellular viability in the biofilm as well as biofilm itself were subsequently assessed. Applicant states low doses of lactonase do not effect biofilm formation, low doses of bleach do not fully remove biofilm, low dose of lactonase does not impact cell viability in the absence of treatment, low dose of lactonase slightly reduces cell viability after 0.3 ppm bleach treatment, and low dose of lactonase abolishes cell viability after 0.9 ppm bleach treatment [page 2].
MPEP 716.02(a) states that evidence must show unexpected results. In view of the combined teachings of Kiran and Guendouze set forth in the rejection above, it is not considered unexpected that the combination of lactonase and antimicrobial inhibits cell growth. Therefore applicant’s allegations of unexpected results do not satisfy the requirements of MPEP 716.02(a).
MPEP 716.02(e) states that a comparison must be done with the closest prior art. As applicant has not compared proffered results to the closest prior art, the allegations of unexpected results do not satisfy the requirements of MPEP 716.02(e).
MPEP 716.02(d) states unexpected results must be commensurate in scope with the claimed invention. Applicant’s proffered results correspond to an experiment wherein a single concentration of an unidentified lactonase and two concentrations of one type of disinfecting agent were exposed to a single bacterium P. aeruginosa. As the scope of the claims encompasses concentrations of mutant SsoPox from 0.1 mg/L to 10 g/L, at least one of all antimicrobials selected from the group consisting of antibiotics, mixtures of antibiotics, disinfecting agents, mixtures of disinfecting agents, biocides, mixtures of biocides, bacteriophages, and mixtures of bacteriophages, wherein each singular group consists of its own respective Markush group of members, and wherein this treatment is applied to one of all bacteria listed in a Markush group, the data proffered by Applicant is not considered to be commensurate in scope with the claimed invention. Therefore applicant’s allegations of unexpected results do not satisfy the requirements of MPEP 716.02(d).
Therefore, Applicant’s Declaration under 37 CFR 1.132 has been fully considered, and is found not persuasive to rebut a prima facie case of obviousness for the reasons set forth above.
Conclusion
Status of the Application:
Claims 1, 8-15, 17, 19 and 21are pending.
Claims 8-15 and 19 are withdrawn.
Claims 1, 17 and 21 are rejected.
No claim is in condition for allowance.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH SPANGLER whose telephone number is (571)270-0314. The examiner can normally be reached M-F 7:30 am - 4:30 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Manjunath Rao can be reached at (571) 272-0939. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOSEPH R SPANGLER/
Examiner
Art Unit 1656
/David Steadman/Primary Examiner, Art Unit 1656
APPENDIX A
PNG
media_image1.png
490
644
media_image1.png
Greyscale
Sequence Alignment of SEQ ID NO: 1 with UniProt Accession No. Q97VT7 (reference UNI), wherein * denotes position 263
APPENDIX B
PNG
media_image2.png
491
635
media_image2.png
Greyscale
Sequence Alignment of SEQ ID NO: 1 with the W263I mutant of SsoPox as described by Guendouze, wherein * denotes position 263.